Tuesday, May 09, 2017

The Board sustained this opposition to registration of the mark AZEKA'S RIBS for "barbecue sauce" [RIBS disclaimed], finding rather easily that the mark is primarily merely a surname. Although that Section 2(e)(4) ruling was dispositive as to the issue of registrability of the mark, the Board exercised its discretion to consider opposer's likelihood of confusion claim, and particularly the issue of whether opposer had abandoned its rights in its pleaded AZEKA'S RIBS mark for marinated ribs. Azeka Building Corp. v. Bryan Kenji Azeka, 212 USPQ2d 1477 (TTAB 2017) [precedential] (Opinion by Judge Quinn).

Section 2(e)(4): In this proceeding involving a dispute between two branches of the Azeka family, the Board considered the Section 2(e)(4) factors set forth in its recent opinion in In re Eximius Coffee, LLC 120 USPQ2d 1276, 1278 (TTAB 2016) [TTABloggedhere]:

1) whether the term is the surname of anyone connected with the applicant;
2) whether the term has any recognized meaning other than as a surname;
3) whether evidence shows that the term has the structure and pronunciation of
a surname;
4) whether there is contextual use related to surname significance; and
5) whether the evidence shows use of the term as a surname is rare.

AZEKA is obviously applicant's surname. There was no evidence that AZEKA has any meaning other than as a surname. The third factor was neutral because the record was devoid of relevant evidence on structure and pronunciation. As a contextual clue, the use of the possessive for AZEKA'S is consistent with the perception of the term as a surname. And the evidence revealed 866 individuals with the surname AZEKA, and at least three websites showing use of AZEKA as a surname, "giving the surname at least some public exposure in the media."

The addition of the word RIBS does not detract from the surname significance of AZEKA, since RIBS is at least descriptive, if not generic, when used in connection with barbecue sauce.

In sum, there was nothing in the record to indicate that AZEKA would be perceived as anything other than a surname, and applicant did not contend otherwise. And so the Board sustained opposer's claim under Section 2(e)(4).

Abandonment: Applicant urged the Board to consider opposer's Section 2(d) likelihood of confusion claim in order to put to rest the controversy between the parties as to which is entitled to claim rights in the AZEKA name in the future. Applicant did not dispute that there is a likelihood of confusion caused by opposer's use of the mark AZEKA'S RIBS for marinated ribs prepared with a "secret sauce" and applicant's identical mark for barbecue sauce. He argued that the confusion issue is rendered moot by opposer's abandonment of its rights in the pleaded mark.

The Board has discretion to decide only the claims necessary to enter judgment and dispose of the case at hand, and is not required to decide every pleaded claim. Nonetheless, it was persuaded that it should decide applicant's abandonment defense, which, according to applicant, was the main controversy between the parties.

The Board agreed that contemporaneous use of the mark would likely cause confusion, but it noted that priority is an element that opposer must establish for a likelihood of confusion claim. If opposer has abandoned rights in its mark, then "it becomes available for other to adopt and use as a trademark."

The Board found, and opposer did not deny, that the period of nonuse of opposer's mark exceeded ten years. A three-year period of nonuse is enough to establish a rebuttable presumption of abandonment with intent not to resume use. The burden of production then shifted to the opposer to produce evidence that it intended to resume use.

Opposer pointed to sporadic attempts to license the mark, but the Board found that they fell short of rebutting the presumption of abandonment.

Essentially the evidence in this case does not show, except in one instance, focused negotiations toward execution of a license agreement; rather, these mostly “one and done” contacts were sporadic, cursory and, given the lack of Opposer’s follow-up in most instances, half-hearted, with zero licenses executed. Opposer’s efforts were neither consistent nor sustained. Evidence of vague discussions concerning the potential use of the mark at some unknown point in the future are insufficient to show an intent to resume use.

Opposer gave no explanation or reason as to why it could not use the mark AZEKA'S RIBS on its own, without a license. "[T]he record simply is devoid of any evidence showing a specific and consistent plan to resume use during a period of ten years."

And so the Board concluded that opposer's pleaded mark was abandoned. Therefore opposer cannot demonstrate priority of its pleaded mark and its Section 2(d) claim failed.

TTABlog comment: The Board's decision to exercise its discretion was the most interesting issue in the case, I think. [The substantive issues were rather straightforward.] The Board regularly declines to decide the issue of dilution, for example, when coupled with a likelihood of confusion claim that is successful.